ZERODENSITY YAZILIM ANONIM SIRKETI successful in opposing registration of an identical trade mark involving similar products.

ZERODENSITY YAZILIM ANONIM SIRKETI (the Opponent) is successful in opposing the registration of an identical trade mark involving similar products even though the trade channels and price point of each party’s product are different. The Registrar cited Prof Ng-Loy Lee Woon’s book Law of Intellectual Property  Of Singapore 3rd Edition citing  – “In passing off, a factor that may have an impact on whether the misrepresentation is likely to confuse the public is the degree of proximity of the parties’ fields of activity: the closer their fields of activity are to each other (i.e. the more similar their goods/services), the greater the risk of confusion; and conversely, the further apart their fields of activity (i.e. the less similar their goods/services), the lower the risk of confusion.”

 

Case:

ZERODENSITY YAZILIM ANONIM SIRKETI v Novel Brands USA LLC [2023] SGIPOS 11

 

Tribunal/Court:

Intellectual Property Office of Singapore (“IPOS”)

 

Type:

Trade Mark Opposition

 

Applicant:

Novel Brands USA LLC (“Applicant”) is a company that produces software products sold directly to consumers and developers, making it easier for them to prototype and produce high-quality augmented reality (“AR”) experiences. Most of its goods are still in the development stage and have not yet been marketed publicly.

 

Opponent:

ZERODENSITY YAZILIM ANONIM SIRKETI (“Opponent”) is in the business of developing broadcasting products and solutions for industries such as broadcasting, AR, live events and e-sports, offering high quality and technologically advanced production with real-time visual effects.

 

Background of the Matter:

This matter concerns the mark “REALITY ENGINE” filed by the Applicant in Class 9 for “downloadable and recorded computer software” (“Application Mark”).

 

The Opponent filed its notice of opposition and alleged the following:

 

It has used “Reality Engine” in respect of its software (that is evident in its business dealings and invoices, amongst others);

 

The sign “Reality Engine” is distinctive of the Opponent’s goods.

 

Issue:

Whether the Opponent is able to establish goodwill, misrepresentation and damage in its opposition against the Application Mark.

 

Decision:

The opposition succeeded; the Application Mark was refused registration.

 

Points of Interest:

1. On the assessment of Goodwill - The Registrar found that the Opponent has goodwill in its business. This is evident in past business dealings by the Opponent. The Registrar clarified that the relevant date for goodwill of the Opponent to be established was the priority claim date of the Application Mark which was 7th March 2019 and not the date of application of the Application Mark which was 7th September 2019.

2. On the assessment of Misrepresentation - The Registrar found in favour of the opponent on all the three points that is required to establish misrepresentation namely:

(a) the mark “Reality Engine” is distinctive;

(b) the use of the Application Mark did misrepresent; and

(c) sufficient likelihood of confusion is likely since both the Applicant and Opponent goods were software goods which have a very niche and specific purpose of providing consumers with VR or AR experiences and visual effects.

(i) The Registrar went on to explain why the arguments of the Applicant against misrepresentation failed:

(a) Trade channel – the Applicant argued that the trade channels were different. The Applicant was a B2C channel while the Opponent B2B channel. The Registrar held in opposition proceedings consideration must be given to the full range of rights sought by the applicant of a trade mark as well as notional fair use to which the applicant many put its mark should the registration be granted.

(b) Careful purchaser – Although the Opponent’s products sold under the Reality Engine brand was more expensive, this element of being more expensive was not sufficient to prevent a likelihood of confusion seeing that the brand was identical for overlapping goods.

(c) Evidence of likelihood of confusion – The Registrar found that the Applicant did not submit evidence that the users of the Opponent’s product were professionals and specialists in organising events involving AR/VR technology.

3. On the assessment of Damages - The Registrar having found that Goodwill and Misrepresentation had been established and the parties are therefore direct competitors, it follows that damage to the Opponent’s goodwill will arise wherein trade could be diverted from the Opponent to the Applicant.